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CSHL Asks Court to Reject Motion to Dismiss Suit Against Former IP Counsel

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By Doug Macron

Cold Spring Harbor Laboratory this month fired back at the law firm it is suing for allegedly mishandling the prosecution of RNAi-related patent applications, arguing in a court filing that the defendant's motion to have the case dismissed should be rejected.

In its opposition, CSHL charged that it was specifically the "malpractice and fraud" of the lawyer handling the intellectual property that led the US Patent and Trademark Office to reject the institution's patent applications, and stated that the alleged misconduct was "perpetuated … over a period of eight years — nearly half the life of a regular US patent."

In February, CSHL sued the law firm Ropes & Gray and one of its former attorneys for allegedly improperly prosecuting two patent applications — Nos. 20040018999, filed May 16, 2001, and 20020162126, filed May 24, 2001 — covering the work of CSHL investigator Greg Hannon (RNAi News 2/25/2010).

According to CSHL's complaint, Ropes & Gray attorney Matthew Vincent, who was handling the IP, failed to provide "an original, complete description of … Hannon's work … [but instead] relied upon copying extensive portions of text — essentially verbatim — from a prior patent application" published by RNAi pioneers Andrew Fire, of the Carnegie Institution of Washington, and Craig Mello, of the University of Massachusetts Medical School.

Fire and Mello's application gave rise to US patent No. 6,506,559, entitled "Genetic Inhibition by Double-Stranded RNA" — the seminal patent in the RNAi field.

CSHL argued that Vincent's actions created the impression that Hannon's work was "either something that Fire invented or was suggested by the Fire application," rather than a novel invention that "represented a considerable advance over the prior art."

The institution also alleged that Vincent concealed his actions from CSHL and Hannon, and by the time it became aware of the situation, the applications had already been "unfairly prejudiced." Both applications were ultimately rejected by the USPTO.

Last month, Ropes & Gray asked the court hearing the case — the US District Court for the Eastern District of New York — to dismiss the suit, arguing that the application rejections were "not only based on [the Fire IP], but also … [in light] of earlier disclosures by other researchers" in addition to Fire — something not mentioned by CSHL in its complaint.

Further, CSHL's complaint is based on the idea that the USPTO "misunderstood what [the Fire patent] discloses and that … Vincent's conduct is what caused that supposed misunderstanding," Ropes & Gray's request states. "Such a 'considerable and purely speculative leap' is incompatible with a claim for legal malpractice."

But in its opposition to Ropes & Gray's motion to dismiss, CSHL noted that the USPTO pointed out in its rejection of one of the Hannon applications that certain descriptions of the invention were "'essentially verbatim' of the disclosure of Fire and that it was 'unclear how [Hannon's invention] differs from what has been disclosed by the prior art.'"

As far as the Hannon applications being rejected due to previous research by investigators other than Fire, CSHL said in its motion that "the rejection by the [USPTO] based on these references are nothing more than further examples of how [the defendants'] malpractice and fraud impeded prosecution."

None of these examples of prior art "currently stand in the way of CSHL gaining allowance of claims," the plaintiff states, noting that two were already overcome during patent prosecution proceedings and are no longer cited in any current rejection. The third, while cited in current rejections, has not been applied to all of the pending claims in the Hannon applications, only to certain of them, it added.

"Thus, the defendants cannot rely on any of these references [of prior art] to demonstrate an intervening cause of CSHL's inability to gain allowance of claims," the institution argues.

"It is because of the gravity of the malpractice that the [patent office] was so steadfast in its position" with respect to the Fire prior art, CSHL argues, since Vincent failed to appropriately differentiate the structure and length of the RNAi molecules of Hannon's work — namely, shRNAs — from the longer molecules described in the Fire patent.

No representative of Ropes & Gray ever told Hannon or CSHL "of the copying of Fire at any point during the prosecution of the Hannon applications," CSHL's opposition states. "Incredibly, while knowing that he would eventually have to distinguish … Hannon's invention from Fire, Vincent withheld the Fire application from the [USPTO] for over four years."

At the same time, during the course of its prosecution of the Hannon applications, Ropes & Gray "filed a number of follow-up applications, squandering several opportunities to properly re-draft the … applications to describe … Hannon's own work in developing his shRNA technology," CSHL added.

"Hannon regularly communicated with Vincent" about the applications, providing data and information directed to the stable expression of shRNAs in mammalian cells," it stated. However, the lawyer failed to "make any reasonable effort to amend the specification to accurately describe those aspects of this new technology."

For these and other reasons, CSHL asked the court to dismiss the defendants' motion.

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